New Hurdles for IPR Petitioners Seeking to Rely on Printed Publications

Printed publications often are the best source of evidence that a patent claim is invalid. For example, textbooks, technical specifications, whitepapers, and even comments posted in an online forum can include details that provide one or more grounds under 35 U.S.C. § 102 (anticipation) or § 103 (obviousness) in support of a petition to institute an Inter Partes Review (IPR) challenging a patent’s claims.

However, in view of a recent precedential decision issued by the Patent Trial and Appeal Board (PTAB), petitioners should be aware that if such art is to be relied upon, there is a non-trivial burden on the petitioner to demonstrate that a given printed publication was publicly accessible before the patent at issue was filed. Indeed, the PTAB has refused to institute an IPR in past cases due to insufficient evidence of public availability.

In one such example, a conference paper having a date listed on its cover and a consistent copyright date indicated was deemed insufficient evidence of public availability. Indeed, the mere fact that a work was created on, or copyrighted as of, a given date does not mean the work was accessible by the public on that date. The PTAB understands that evidence of the former alone is not dispositive with respect to the latter.

Petitioners are provided with a very limited number of opportunities to convince the PTAB to institute an IPR. Accordingly, if you’re considering asking the USPTO to invalidate patent claims via IPR, it is essential to ensure that you’re working with a legal team that knows the ropes.